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Merchandise in transit in France: a breach of rights at last sanctioned against?

In France trademark law has recently undergone substantial transformation following the transposition of EU Directive No. 2015/2436 of December 16, 2015 (called the “Trademark Package”) by Order No. 2019-1169 of November 13, 2019. One point arising from these reforms would in particular appear welcome: the new provisions regarding merchandise in transit on French territory and suspected of infringement.

New articles L. 713-3-2 and L. 716-4-4 of the French Intellectual Property Code (*) transpose Article 10.4 of the Trademarks Directive in this regard.

The matter concerned – and this is rather frequent in reality – is that of products in transit in France between other countries, without commercialization in France.

The former situation, based on case law from 2011 (**), did little to favor right holders unless they could succeed in the more than difficult task of providing evidence that the merchandise in transit was destined for commercialization within the EU (and not therefore “merely” in transit) as a basis legal action. As a result, the number of customs seizures and of infringements sanctioned against had substantially fallen, to the consternation of European economic players holding the rights, and to the profit of organized networks of counterfeiters.

Under these new provisions, it is thus no longer necessary to provide such evidence of commercialization of the goods on the national market to be able to act.

New Article L.713-3-2, which is slightly different in its wording from its European equivalent, however leaves the door open to numerous questions, which the courts will have to reply to in the coming months and years.

To be precise, it provides that, without authorization from the trademark owner, the following are prohibited:

Goods, packaging included, bearing a sign (thus apparently these legal provisions are not limited to trademarks, as in the European Directive) that is identical to a trademark (identical reproduction is thus concerned here);

Or bearing a sign that cannot be distinguished therefrom as regards its essential aspects (the concern here is with signs that are close and no longer identical, but this concept will have to be clarified by the courts: how might it differ from the more classically used concept of imitation?);

In the course of business, without them being required to be placed in free circulation (here too, is a critical concept which the courts will have to interpret, but it may be understood that an actual or probable act of commercialization is no longer the first criterion to take into account).

Article L.716-4-4 for its part provides a ground of defense for a party holding goods, opening the door to an interpretation of foreign law by the national judge, and to a partial weakening of the principle of territoriality: since to determine and characterize an act of infringement in France the judge will have to assess whether or not the owner of the registered trademark has the right to prevent the placing on the market of the goods in the country of destination. This therefore requires delving into foreign territory to show non infringement in France and will surely be the subject of a great deal of comment in the coming months.

Even though a number of doubts remain, these new provisions would appear welcome to empower the owners of trademarks in their fight against infringement. It will be necessary to monitor disputes based on these new provisions and to study their interpretation by the judges on the merits to better comprehend them and assess their scope.

All our team is at your disposal to protect your rights in a pragmatic and effective way, and to advise you in the active defense of your rights.

Olivier Marcombes

 Olivier Marcombes, an intellectual property lawyer, joined Santarelli in 2013. Today, he assists a clientele mainly composed of major French companies in an international context.

(* ):  Legifrance : code de la propriété intellectuelle – Article L713-3-2    and Article L716-4-4


(**) Nokia Philips CJEU 01/12/2011  InfoCuria C-446